EU: Unitary Patent Regulation and Unified Patent Court Agreement; An update

09 January 2013

Gerry Kamstra

To recap, the package of proposals relating to the Unitary Patent and the Unified Patent Court consists of 4 principal documents: two EU legislative proposals put forward by the Commission under the enhanced cooperation procedure (Article 329(1) TFEU), namely a Regulation creating the Unitary Patent and a Regu ation on translation arrangements relating thereto; and an intergovernmental Agreement on a Unified Patent Court and Rules of Procedure relating to the Court. This article provides an update on the latest developments and future timelines with regard to the finalisation and implementation of the proposals.

First, to update the position with regard to the (so-far) non-participating Member States (which required the adoption of the enhanced cooperation procedure), Attorney-General Bot advised the Court of Justice of the European Union (CJEU) in his opinion of 11 December 2012 that the challenges by Spain and Italy to the use of the enhanced cooperation procedure are without foundation.

It remains to be seen whether the CJEU follows the opinion, but this seems more likely than not. Further, in a Press Release following a meeting of the Competitiveness Council meeting on 10 December 2012 it is recorded that “the third element of the package is the Unified Patent Court Agreement (UPC) where only Spain does not participate” – which indicates that Italy no longer intends to refrain from participation in the package of arrangements, leaving only Spain outside.

In recent months there has been considerable discussion within the JURI (Legal Affairs) committee of the European Parliament as to the legitimacy of removing those provisions of the proposed Regulation on the Unitary Patent that define those acts that amount to infringement of the Unitary Patent (Articles 6 to 8) - a number of Member States were keen to remove these provisions, out of a concern that the CJEU (or a Chamber thereof) would be ill-equipped and slow to deal with questions of infringement if it were to have jurisdiction (as would necessarily be the case if Articles 6 to 8 were to remain in the Regulation).

In a surprise compromise agreed at meetings of the Council Permanent Representatives Committee (COREPER) and the JURI committee of the European Parliament on 19 November 2012, Articles 6 to 8 of the proposed Regulation were removed and replaced by a proposed Article 5a. The compromise text is worth quoting in full, given the concerns that have been raised as to its potential capacity to lead to inconsistent decisions of the Unified Patent Court (see sub-article (3) below):

Uniform Protection

  1. The European patent with unitary effect shall confer on its proprietor the right to prevent any third party from committing acts against which the patent provides protection throughout the territories of the participating Member States in which the patent has unitary effect, subject to applicable limitations.
  2. The scope of this right and its limitations shall be uniform in all participating Member States in which the patent has unitary effect.
  3. The acts against which the patent provides protection referred to in paragraph 1 and the applicable limitations shall be those defined by the law applied to European patents with unitary effect in the participating Member State whose national law is applicable to the European patent with unitary effect as an object of property in accordance with Article 10.
  4. In the report referred to in Article 20(1) the Commission shall evaluate the functioning of the applicable limitations and, where necessary, shall make appropriate proposals.

That said, it should be noted that those acts that amount to infringement of the Unitary Patent are governed by the substantive provisions in Articles 14f – 14i of the Agreement and it is arguable (and perhaps intended) therefore that Article 5a (3) of the proposed Regulation refers to these provisions, as applied by the Unified Patent Court divisions situated in the contracting Member States to the Agreement, rather than to national laws and decisions applicable to patents generally.

The package (ie the two proposed Regulations and the Agreement) was endorsed by the Competitiveness Council at a meeting on 10 December 2012 and adopted by the European Parliament on 11 December 2012 and by the Council on 17 December 2012. The Regulations will apply from 1 January 2014 or the entry into force of the Agreement, whichever is the later.  As to entry into effect of the Agreement, it is anticipated that it will be signed by the interested Member States (ie all Member States excluding Spain) at a diplomatic conference in February 2013 and that the ratification requirements (13 Member States, with the UK, Germany and France as necessary ratifiers) will be completed in time for the Agreement to enter into force on 1 January 2014.

As to the Rules of Procedure and other matters, it is intended that at the diplomatic signing of the Agreement the Member States will enter into a Declaration as to the preparations for the coming into operation of the Agreement. To this end a Preparatory Committee will finalise the Rules of Procedure (the latest draft dated 29 November 2012 is some 155 pages long), arrange the training of future judges, prepare the budget for the first financial year of operation, make proposals for appropriate facilities for the divisions of the First Instance and the Court of Appeal and set fees (it is proposed that a mixed system of fixed and value-based fees should apply).

Importantly, there are also changes to existing legislation and agreements that will be required before the Agreement enters into force: the European Patent Convention requires changes, as the EPO will be the granting authority for Unitary Patents; the “Brussels Regulation” (Regulation 44/2001) on civil jurisdiction requires changes, as the Agreement relies upon it to address jurisdictional issues; and the SPC Regulations (Regulations 469/2009 and 1610/96) require changes to encompass the grant of SPCs under Unitary Patents.

Finally, Member States will need to decide whether to seek to establish local divisions, or participate in regional divisions, of the Unified Patent Court. The seat of the central division has already been chosen as Paris, with London chosen as the seat of the specialist section dealing with cases involving chemistry (including pharmaceuticals and human necessities) and Munich chosen as the seat of the specialist section dealing with mechanical engineering cases. The allocation of types of claim to each division is complex and summarised below:





Local or regional if any (otherwise central), unless defendant outside territory of contracting Member States (when can be central)


Declarations of non-infringement


Stayed if infringement action started within three months

Provisional and protective measures and injunctions

Local or regional if any (otherwise central) unless defendant outside territory of contracting Member States (when can be central)




Unless infringement action already on foot – but infringement action may be started in a local or regional division, the jurisdiction of which is unaffected by the revocation action in the central division

Counterclaim for revocation

Local or regional division if any

Local or regional division has discretion whether to hear counterclaim, refer counterclaim to central division (staying infringement action or proceeding with it) or (but only with agreement of parties) referring the whole matter to the central division

[1]In the Council statement in October 2012 there was a sentence that reads “There will be no possibility for the defendant to request a transfer of an infringement case from a local division to the central division if the defendant is domiciled within the European Union”. This was a condition demanded by Mrs Merkel, aimed at disarming the so-called Unilever clause, which would protect European defendants from bifurcation. It is now again under discussion, as it is unclear, for instance as to whether it would also apply to regional divisions.

Other items in the Patents Update newsletter for January 2013:

> China: Two recent Supreme Court decisions open up greater possibilities for amendment of Chinese patents

> England: The PCC - A review of the first four patent cases to come to trial in the PCC

> Germany: "Customary usage in the trade" gains importance in determining infringement in repair/reconstruction cases

> Germany: Stay of first instance infringement decisions in standard essential patent actions

> Holland: Cross-border patent litigation revival 'Solvay vs Honeywell'

> Spain: Some interesting peculiarities of Spanish Utility Models

> England: The Patents Court exercises its jurisdiction to grant a pan-European declaration of non-infringement

> England: Patent litigation statistics for 2011 and 2012

> England: The Patent Box